S.76(3) Trademarks Act Does Not Require Both Rival Marks To Be Registered CTMs, Targeted Client Base Relevant To Infringement: Delhi High Court

In an application filed by a leading Scrum certification organization, the Delhi High Court yesterday granted interlocutory injunction restraining the defendants from using the plaintiff’s mark “CERTIFIED SCRUM MASTER” as well as its logo. The plaintiff, being registered proprietor of Certification Trade Marks (CTMs) “CERTIFIED SCRUMMASTER”, “CSM” and certain device marks, had filed the application under Order 39 Rules 1 and 2 CPC, claiming that defendants were using marks and logo deceptively similar to that of its own. It was further claimed that the impugned marks were being used to provide identical certification services, thereby enhancing the possibility of confusion. In their defense, the defendants invoked Section 76 of the Trade Marks Act (acts not constituting infringement of CTMs) to oppose the prayer for interim relief. At the outset, the court enunciated the ingredients for arriving at a satisfaction that a CTM had been infringed thus: (i) the infringing mark must be used by a person who is neither the proprietor of the registered CTM nor a person authorized, by the proprietor, to use the CTM, (ii) the infringing usage must be in the course of trade, (iii) the infringing mark must be either - (a) identical or (b) deceptively similar - to the registered CTM, (iv) the usage must be in relation to goods or services in respect of which the CTM is registered and (v) the manner of usage must be such as to render the use likely to be taken as trade mark usage. Perusing the rival marks, Justice C. Hari Shankar opined that the difference between them was miniscule, and thus insignificant to the aspect of deceptive similarity/infringement. “The only difference between and “CERTIFIED SCRUM MASTER”, insofar as their textual component is concerned, is that the plaintiff has combined the words “SCRUM” and “MASTER” to read “SCRUMMASTER”, Whereas the defendants have retained “SCRUM” and “MASTER” as separate words”. A prima facie case of infringement under Section 75 of the Trade Marks Act was held to have been made out, considering that the defendants were not authorized by the plaintiff to use the impugned marks, that the impugned marks were deceptively similar to the plaintiff’s and that defendants were using the impugned marks as trademarks. Insofar as the defendants had relied on Section 76 of the Trade Marks Act, the court observed, “…Section 76(3), in order to apply, does not require both the rival marks to be registered CTMs…So long as both the marks are registered under the Trade Marks Act, and one of them is a CTM, the fact of registration would entitle each of the said marks to be used as a trademark, and no injunction against such use can be granted, irrespective of whether the mark is, or is not, infringing”. As defendant No.1 was found to be the proprietor of mark “CSM” (registered as a word mark and not as CTM), the court declined to injunct its use of “CSM” as a word mark. However, as “CERTIFIED SCRUM MASTER” and the impugned logo were not registered in favor of defendants, the court held that claim for injunction could not be avoided. Pertinently, the defendants had also contended that there was no likelihood of confusion, as persons who would have to deal with the marks would be able to distinguish between them. Disagreeing, Justice Shankar observed that in case of CTMs, targeted client base would also be a relevant consideration when assessing infringement. “…likelihood of confusion, in trademark infringement or passing off, is to be assessed on the basis of the initial impression conveyed by the allegedly infringing mark…No doubt, the possibility of confusion would not be evaluated, in the case of a CTM, on the basis of the perception of the average consumer on the street, who has nothing to do with the CTMs concerned, as the targeted client base is also a relevant factor to be borne in mind while assessing the likelihood of confusion”. Speaking of likelihood of confusion involved in the case, the court also said, “It is obvious that a person who is familiar with the plaintiff’s CTM “CERTIFIED SCRUMMASTER”, and who comes across the defendants mark, is likely, even if for a fleeting moment, to wonder whether it is not the plaintiff who is providing the said certification. That momentary feeling of wonderment would, by itself and without anything else, suffice to constitute “likelihood of confusion”.” In the court’s view, the possibility of confusion was exacerbated by the defendants’ use of a “sun” motif used by the plaintiff in its mark. Considering the same, it was recorded that an intent to imitate the plaintiff was apparent. “The mark of the defendants being, prima facie, a conscious depiction of “Certified Scrum Master” encased in a “sun” motif, the intent to confuse the certification provided by the defendants with that provided by the plaintiff appears,...

S.76(3) Trademarks Act Does Not Require Both Rival Marks To Be Registered CTMs, Targeted Client Base Relevant To Infringement: Delhi High Court

Debby Jain

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